Ex Parte Broumand et alDownload PDFPatent Trial and Appeal BoardOct 27, 201613225392 (P.T.A.B. Oct. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/225,392 18456 7590 Mike Garrabrants 14 Saint Stephens Dr. Orinda, CA 94563 09/02/2011 10/31/2016 FIRST NAMED INVENTOR Joseph Broumand UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 1005.002.CPUSOO 1436 EXAMINER OSMAN BILAL AHME, AF AF ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 10/31/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): mike@artesynip.com patentgroup@artesynip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH BROUMAND, MARC GOLUB, and HOW ARD CHANG Appeal2014-004296 Application 13/225,392 Technology Center 3600 Before: MURRIEL E. CRAWFORD, BRADLEY B. BAY AT, and MATTHEWS. MEYERS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant(s) seek our review under 35 U.S.C. § 134 of the Examiner's Final decision rejecting claims 5, 6, 8-16 and 19-27. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal2014-004296 Application 13/225,392 Claim 5 is illustrative: 5. A machine implemented process of qualified offer presentation and acceptance, comprising: providing a script to a web browser executing in a device, from a promoter server, wherein the script is referenced in web page content originating from a content server that is being accessed by the web browser of the device; accessing, by the script executing in the web browser, state information provided from the content server and stored for the web browser, the state information comprising profile information about a user of the device, the profile information comprising one or more items of Personally Identifiable Information (PII) and one or more items of demographic information; one way hashing, by the script executing in the web browser, at least one item of the PII; sending the one-way hashed item of PII to the promoter server; sending at least one of the items of demographic information to the promoter server; using, at the promoter server, the one-way hashed item of PII to perform a database query to retrieve information comprising information indicative of which offers have been accepted by a user associated with that one-way hashed item of PII; determining, at the promoter server, one or more offers having qualification criteria that match the at least one item of demographic information and which have not been accepted by the user associated with that one-way hashed item of PII; sending to the script, an indication of the one or more matching offers; presenting one or more forms in the web browser on the device, having at least one field for requesting offer-specific information specified by a respective third-party entity associated with each presented matching offer; and returning the offer-specific information entered by the user in each of the at least one fields to the promoter server. 2 Appeal2014-004296 Application 13/225,392 Appellant(s) appeal the following rejection(s): 1. Claims 5---6, 8-16, 19-20, and 25-26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Frengut et al, (US 2002/0046099 Al, pub. Apr. 18, 2002, hereinafter "Frengut"), Lukose et al, (US 2006/0041472 Al, hereinafter "Lukose") Van Lunchene et al, (US 2004/0138953 Al, hereinafter "Van Lunchene"). 2. Claims 15-16 and 21-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Frengut, Lukose, and Van Lunchene. 3. Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Frengut, Lukose, Van Lunchene, and Wilkins. ISSUE Did the Examiner err in rejecting the claims because the Examiner has not established that the prior art discloses or suggests a promoter server operable to use hash personally identifiable information in a database query? ANALYSIS The Examiner relies on Lukose for teaching sending one way hashed personally identifiable information ("PII") to the promoter server (Final Act. 14). The Appellants argue that the hashed PII in Lukose is not used in a database search as required by claim 5 and that there is no suggestion in the prior art of using hashed PII in a database search. We find that Lukose discloses a system in which a user receives advertiser incentives [0046]. Lukose discloses that a user may be tempted to scam the advertising system so as to receive more advertiser incentives. To address the possible scams by consumers, the Lukose reference teaches that 3 Appeal2014-004296 Application 13/225,392 the system may implement various defenses to prevent or minimize the occurrences of scams. Some of the ways the system can address the possible scamming problem is by capping the amount of incentives, requiring the consumer to have actually purchased a product, and requiring the consumer to view advertisements and input certain information to verify that they saw the advertisement. Lukose also discloses another way of addressing the possible scam by a consumer in which the consumer changes their profile so as to be one that attracts more offers. In this case, Lukose discloses that there can be two versions of the consumer profile, one in plain text and one that is hashed or encrypted. Lukose discloses an embodiment in which the hashed version is a one way global function accessible by the network only. In order for a consumer to receive an offer, the hashed version of the consumer profile must match the plain text consumer profile [ 4 7]. While it is true the Lukose in paragraphs 4 7 discloses one way hashing, there is no disclosure that the hashed PII is used to query a database. In addition, it is the system, not the user, in Lukose that hashes the profile not the web browser on the user's device as required by claim 5. The Examiner also relies on paragraph 20 of Lukose for teaching this subject matter. Paragraph 20 discloses that a client may permit transmission of targeted advertisement to the client without revealing the PII of the user. However, this portion of Lukose does not disclose one way hashed PII and certainly does not disclose using the hashed PII as the basis of a query of a database. The Examiner does not explain how the teaching in Lukose of consumers receiving advertisements without revealing PII and the teaching of hashing consumer profiles so as to prevent the consumers from scamming 4 Appeal2014-004296 Application 13/225,392 the system suggest using hashed Pll to query a database. The only explanation of the reasoning for this rejection is that it is merely a combination of old elements in which each element would perform the same function as it did separately and one of ordinary skill in the art would have recognized the results as predictable (Final Act. 14). However, the teaching in paragraph 20 of not revealing PII in order to receive advertisement in Lukose does not involve the function of using PII in a database query in any way. In addition, there is no disclosure in Lukose in paragraph 20 of one way hashing by the user. The function of the hashed consumer profile as disclosed in Lukose in paragraph 4 7 is to prevent the consumer from scamming the system by allowing the system to compare the hashed consumer profile with the plain text consumer profile. The function disclosed in Lukose of the hashed consumer profile is not to perform a database query. In addition, it is the system in Lukose that hashes the profile, not the consumer. As such, the rationale of the rejection does not support a conclusion of obviousness. In view of the foregoing, we will not sustain the Examiner's rejection of claim 5 and claims 6, 8-12 dependent thereon. We will also not sustain the rejection as it is directed to claim 13 and claims 14 to 16 dependent therefrom. Claim 13 requires that promoter servers receive one way hashed PII from the consumer device. As discussed above, Lukose discloses that the PII is hashed by the system to prevent scamming by the consumer. In Lukose, it is the system that hashes the PII. The Examiner has not established how this teaching in Lukose suggests the Lukose system receiving hashed PII from the user. 5 Appeal2014-004296 Application 13/225,392 In view of the foregoing, we will not sustain the Examiner's rejection of claim 13 and claims 14--16 dependent therefrom. We will also not sustain this rejection as it is directed to claim 19 and claims 20-24 dependent therefrom, because claim 19 requires that a second script executed by the web browser of the user device provides one-way hashed PII to the promoter serving system. As such, claim 19, like claim 13, also requires that a promoter server receiving one way hashed PII from the consumer device. We will likewise not sustain the rejection as it is directed to claim 25 and claims 26 to 27 because claim 25 requires a promoter server that uses hashed PII in a database lookup. DECISION The decision of the Examiner is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation